Ex Parte Quah et al

Patent Trial and Appeal Board

Jun 24, 2016

13681621 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/681,621 11120/2012
27820 7590 06/28/2016
WITHROW & TERRANOVA, PLLC
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
Elaine Quah
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
7000-528C 1993
EXAMINER
PHUNG,LUAT
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
06/28/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC L. BARSNESS, PAUL S. NELSESTUEN,
and JOHN M. SANTOSUOSSO
Appeal2015-000874
Application 13/681,621
Technology Center 2400
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The claimed invention relates to a technique allowing application
servers to initiate sessions in an Internet Protocol multimedia subsystem
("IMS"). Spec. 1. IMS is a standardized architecture for providing
1 The Appeal Brief identifies Rockstar Consortium US LP as the real party
in interest. Br. 2.
Appeal2015-000874
Application 13/681,621
multimedia services over a network supporting packet-based
communications. Id. Claims 1 and 13 are independent. Claim 1, which is
illustrative of the invention, reads as follows:
1. A method of initiating sessions through an Internet
Protocol multimedia subsystem (IMS) from an application
server, the method comprising:
at the application server, creating a session initiation
message configured to initiate a session through the IMS
between a designated originating element and a terminating
element;
from the application server, sending the session initiation
message directly to an interrogating call/session control
function (I-CSCF) in the IMS to initiate the session;
at the I-CSCF, receiving the session initiation message;
determining a first serving call/session control function,
S-CSCF, to which the session initiation message should be
roitted; and
from the I-CSCF, routing the session initiation message
to the first S-CSCF.
Br. 16 (emphasis added).
REFERENCES
The Examiner relies upon the following prior art:
Huotari
Westman
Quah
US 2004/0184452 Al
US 2005/0013285 Al
US 8,325,707 B2
2
Sept. 23, 2004
Jan.20,2005
Dec. 4, 2012
Appeal2015-000874
Application 13/681,621
THE REJECTIONS
The claims stand rejected as follows:
Claims 1-3, 5-11, 13-15, and 17 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Huotari. Final Act. 11-14.
Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Huotari and Appellants' Admitted Prior Art . Final Act.
16.
Claims 12 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Huotari and Westman. Final Act. 16-17.
Claims 1-11 and 13-17 stand rejected on the ground of nonstatutory
obviousness-type double patenting, as being unpatentable over Quah. Final
Act. 6-10.
Claims 12 and 18 stand rejected on the ground ofnonstatutory
obviousness-type double patenting, as being unpatentable over Quah and
Westman. Final Act. 10.
ANALYSIS
On this record, we are unpersuaded of error in the Examiner's
rejection of the claims on appeal. We agree with the Examiner that the
claims on appeal are unpatentable over the cited combination of references,
and we adopt as our own the findings and reasons set forth in the rejections
from which this appeal is taken and in the Examiner's Answer. We have
considered in this decision only those arguments Appellants actually raised
in their Brief. Any other arguments which Appellants could have made but
chose not to make in the Brief are deemed to be waived. See 37 C.F.R.
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Appeal2015-000874
Application 13/681,621
§ 41.37(c)(l)(iv). We provide the following explanation to highlight and
address specific arguments.
Rejections under 35 US.C. § 102(e)
Appellants argue the claims as a group, with claim 1 representative of
the group. See 37 C.F.R. § 41.37(c)(iv). Appellants contend at least three of
the claim limitations, as emphasized above (supra at 2), are not disclosed in
Huotari, and thus the Examiner erred in finding Huotari anticipates the
claim. Br. 8-12. We address each argument in tum.
Appellants first argue Huotari fails to disclose "at the application
server, creating a session initiation message configured to initiate a session
through the IMS between a designated originating element and a terminating
element." Br. 8-9. The Examiner finds this element in Huotari's disclosure
of a "SIP [Session Initiation Protocol] MESSAGE request," which is
generated by the "AS 60 [Application Server 60]" and initiates a session
through the IMS between two elements (i.e., an originating element and a
terminating element). Ans. 5-6; Final Act. 11; Huotari i-fi-134, 36.
Appellants contend a "SIP MESSAGE" is not a message "configured to
initiate a session," as the claim recites, but rather is to transport instant
messages using SIP. Br. 10 (citing various SIP commands). Huotari,
however, refers not to a "SIP MESSAGE" but a "SIP MESSAGE request,"
and as the Examiner finds, in Huotari this request initiates a session through
the IMS. Ans. 5---6 (emphasis added).
This can be seen more plainly in Figure 2 of Huotari, reproduced
below.
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Appeal2015-000874
Application 13/681,621
2. queiy
6. query .-------·-··
I AS I
I 6-0 I
I ,
L._ T--~--·J
1. MESSAGE (with notification) !
3.MESSAGE 1 1·-·--··--·
4b: 480 Temp. Unav i
I-----·--·-Iii" T0 • .,~,;" .,_,.,~e
S. SUBSCRIBE
----·--- -------·-------·---
7. SUBSCRIBE [
Sa. 200 OK
Ob. 200 OK ·---.. ·~-r-·-~·-----·---·-----+i
r-~~J
I
10a. NOTIFY ' 9. re istration ------->
~-sta!g changed) l
_ 10b. NOTIFYjstate changed
r.-: 11a. 200 OK --1 I
~:2000K I I
I . ry ]- ----- 12. MESSAGE -~ i
~ I 14.MESSAGE I J
! I '4 15. MESSAGE delivered J
I I
Fig. 2
Figure 2 is a diagram illustrating the signaling and processing steps involved
with "delivery of a notification to an IMS subscriber," in an embodiment
disclosed in Huotari. Huotari i-f 27. The initiating step of this process, i.e.,
"step 1," is the application server AS 60 "generating a SIP MESSAGE
request" (see Huotari i-f 34) and sending that request to I-CSCF-50 (see Fig.
2). The request "includes the direct or indirect notification." Id. After step
1, a series of additional communications ensues, terminating with delivery of
the message to user equipment ("UE 40"). Fig. 2.
To the extent Appellants imply (Br. 10) Figure 2 may not illustrate a
"session," we note Appellants define "session" broadly and circularly (if at
all) in the Specification. Spec. 2 ("calls or sessions are collectively referred
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Appeal2015-000874
Application 13/681,621
to as sessions."). Appellants point to no part of the record defining a
"session" as excluding the IMS communications disclosed in Huotari.
For the foregoing reasons, we find, as did the Examiner (Ans. 5---6),
Huotari discloses "at the application server, creating a session initiation
message configured to initiate a session through the IMS between a
designated originating element and a terminating element."
Appellants next argue the Examiner erred in finding Huotari discloses
"from the application server, sending the session initiation message directly
to an interrogating call/session control function (I-CSCF) in the IMS to
initiate the session." Br. 11 (emphasis added). This argument is redundant
to Appellants' first argument, as Appellants contend "since Huotari does not
[disclose] a 'session initiation message,' Huotari also cannot [disclose]"
sending such message. Id. As indicated above, however, we find Huotari
discloses a session initiation message. Moreover, referring to Figure 2,
above, step 1 illustrates the application server (AS 60) sending the message
directly to an I-CSCF just as Appellants' claim recites. See also Ans. 6;
Huotari i-fi-134, 36.
Finally, Appellants argue the Examiner erred in finding Huotari
discloses "determining a first serving call/session control function, S-CSCF,
to which the session initiation message should be routed." Br. 12. Referring
again to Figure 2 of Huotari, however, step 3 shows the session initiation
message is routed to "S-CSCFo 10." This routing is performed by "I-CSCF
50," and is determined based upon the "routing information" obtained by the
I-CSCF 50 in step 2. Ans. 8; Houtari i-f 36, Fig 2. Thus, the I-CSCF 50
determines the S-CSCF to which the message should be routed, as required
by the claim. Id.
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Appeal2015-000874
Application 13/681,621
For the foregoing reasons, we sustain the rejection of claims 1-3, 5-
11, 13-15, and 17 under 35 U.S.C. § 102(e) as anticipated by Huotari.
Rejections under 35 USC§ 103(a)
Claims 4, 12, 16, and 18 stand rejected as obvious over Huotari and
additional references. Appellants argue the additional references do not
remedy the deficiencies of Huotari. Br. 13-14. Because we rejected the
arguments with respect to Huotari for the reasons set forth above, we sustain
the rejections of claims 4, 12, 16, and 18.
Nonstatutory Obviousness-type Double Patenting Rejections
Appellants argue the Examiner erred in finding Appellants' claim 1
not patentably distinct from claim 1 of Quah. Br. 13. Specifically,
Appellants contend "[f]or example, claim 1 of the present application recites
that a session initiation message is created at the application server, which is
not recited in claim 1 of [Quah]." Id. (emphasis added). We do not agree.
Claim l of Quah recites "at the I-CSCF, rece1vmg directly from an
application server a session initiation message configured to initiate a
session through the IMS." The Examiner finds the application server in
Quah "'directly' sending a session initiation message requires []the
application server having created a message before sending it," as recited in
Appellants' claim 1. Ans. 3--4. Appellants do not explain the error in this
finding, or why Appellants' claim 1 is not obvious in view of the subject
matter of Quah claim 1. We therefore sustain the obviousness-type double
patenting rejection of claim 1.
Appellants also assert, with respect to claims 1-11 and 13-1 7, there
are other "differences in the claims" but that the rejection is premature, and
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Appeal2015-000874
Application 13/681,621
Appellants "will further address the rejection at a later time, when the claims
are otherwise in condition for allowance." Br. 5. Because Appellants
present no further arguments, we sustain the nonstatutory obviousness-type
double patenting rejection. See Hyatt v. Dudas, 551F.3d1307, 1314 (Fed.
Cir. 2008) ("When the appellant fails to contest a ground of rejection to the
Board, ... the Board may treat any argument with respect to that ground of
rejection as waived.").
DECISION
The Examiner's rejections of claims 1-18 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2013).
AFFIRMED
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